Entertainment Law Reporter
September 2005 Volume 27 Number 3

Screenwriter Nancey Silvers does not have standing to bring lawsuit alleging that copyright to CBS movie “The Other Woman” was infringed by Sony movie “Stepmom,” because Silvers wrote “Other Woman” as work-made-for-hire and received assignment of infringement claim only, not any interest in copyright itself

        Screenwriter Nancey Silvers will not be able to pursue her copyright infringement claim against Sony Pictures, after all, because the Ninth Circuit Court of Appeals, sitting en banc, has held that she doesn’t have standing to do so.

        The underlying dispute between Silvers and Sony sounds like an interesting one. Silvers thinks that the theatrical movie “Stepmom,” released by Sony in 1998, infringes the copyright to a made-for-TV movie that she wrote called “The Other Woman,” broadcast by CBS in 1995. “The Other Woman” is about the relationship between a mother who has cancer and her ex-husband’s new wife who will raise the mother’s children when she dies. “Stepmom” is about the relationship between a mother who has cancer and her ex-husband’s fiancé who will raise the children when she dies.

        The question of whether “Stepmom” actually does infringe the copyright to “The Other Woman” has never been decided, because Sony began its defense of the case by asserting that Silvers didn’t have standing to file it. Silvers wrote “The Other Woman” as a work-made-for-hire, on behalf of the company that produced the movie, Frank and Bob Films, which owns the movie’s copyright, even now. The company did, however, assign to Silvers “all right, title and interest in and to any claims and causes of action against Sony . . . with respect to the screenplay ‘The Other Woman’ . . . and the motion picture ‘Stepmom.’”

        The assignment to Silvers was executed after Sony allegedly infringed the copyright to “The Other Woman,” and it was that assignment that Silvers relied on to assert her infringement claim. Sony didn’t dispute the authenticity of the assignment. It merely pointed out that the Copyright Act provides that “The legal or beneficial owner of an exclusive right under a copyright is entitled . . . to institute an action for . . . infringement.” And it argued that the assignment to Silvers of “claims and causes of action against Sony” didn’t give her any “exclusive right under a copyright.”

        Federal District Judge Stephen Wilson disagreed with Sony, and denied its motion to dismiss. Judge Wilson did, however, certify the issue for interlocutory appeal. At first, Sony did no better on appeal. In an opinion by Judge Melvin Brunetti, a three-judge panel agreed with Judge Wilson that Silvers did have standing to bring the case (ELR 25:4:14). But Sony’s petition for a rehearing en banc was granted (ELR 26:2:26). And following that rehearing, the Court of Appeals finally agreed with Sony, by a seven-to-four margin.

        In an opinion by Judge Susan Graber, the seven-judge majority noted that section 501(b) of the Copyright Act clearly provides that the “owner of an exclusive right under a copyright is entitled . . . to institute an action for any infringement of that particular right committed while he or she is the owner of it.” Silvers did not receive an assignment of an exclusive right under the CBS movie’s copyright, and Sony’s alleged infringement of that copyright did not occur while she was the owner of anything (it happened before the claim was assigned to her).

        Judge Graber’s analysis was a simple and straightforward application of the language of the Copyright Act, which does indeed say what she and the rest of the majority said it says. But that analysis was too simple and straightforward for Judge Marsha Berzon. She would have held that “Silvers, . . . as the original creator of the contested ‘work-for-hire,’ may pursue the accrued claims assigned by Frank & Bob Films, . . . [even though] a complete stranger to the creative process could not.” (Judge Stephen Reinhardt agreed with Judge Berzon.)

        Judge Graber’s analysis also was too simple and straightforward for Judge Carlos Bea. He would have allowed Silvers – or any other assignee of the infringement claim – to file suit. He acknowledged that some types of claims may not be assigned for policy reasons, such as claims for personal injuries, legal malpractice, and securities law violations. But the majority’s opinion was not based on policy concerns, he observed. “Nor indeed is there a reasoned policy consideration given for prohibiting suit upon an accrued cause of action for infringement,” he said. (Judge Andrew Kleinfeld agreed with Judge Bea.)

        Silvers was represented by Steven Glaser of Gelfand Rappaport & Glaser in Los Angeles. Sony was represented by Ronald S. Rauchberg of Proskauer Rose in New York City, George P. Schiavelli of Reed Smith Crosby Heafey in Los Angeles, and Benjamin G. Shatz of Manatt Phelps & Phillips in Los Angeles.

        Editor’s note: The question of whether Silvers had standing to sue Sony was a tougher one than this brief report reveals. Behind the judges’ differing conclusions were differing and conflicting views concerning the proper techniques of statutory interpretation. Indeed, although Judge Wilson’s original decision was unreported, and Judge Brunetti’s opinion for the three-judge panel was quite short, the three opinions making up the en banc decision were lengthy and quite philosophical, reading more like essays on legal process than decisions on the dry issue of “standing.” The difficulty of the issue also is illustrated by the fact that although Silvers lost, she actually persuaded eight federal judges that she did have standing (the District Judge, the three judges of the original Court of Appeals panel (none of whom participated in the en banc ruling), plus the four judges who dissented from the en banc ruling), while Sony persuaded only seven judges that she didn’t! What’s more, the outcome would have been different, if only the wording of the assignment to Silvers had been a bit different. Frank & Bob Films kept the movie’s copyright, presumably because the only thing it was willing to assign to Silvers was the claim against Sony. If, though, the assignment had transferred to Silvers the “exclusive right to license Sony Pictures to produce a theatrical motion picture based on ‘The Other Woman,’” that would have been an assignment of an interest in the movie’s copyright. And then, even the seven-judge majority of the Court of Appeals would have held that Silvers had standing to sue.

Silvers v. Sony Pictures Entertainment, 402 F.3d 881, 2005 U.S.App.LEXIS 4850 (9th Cir. 2005)